Ontel Products Corporation v. Jimmy Li
Claim Number: FA1809001806743
Complainant is Ontel Products Corporation ("Complainant"), represented by Jenny T. Slocum of Dickinson Wright PLLC, Washington DC, USA. Respondent is Jimmy Li ("Respondent"), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magictracks.toys>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2018; the Forum received payment on September 19, 2018.
On September 19, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <magictracks.toys> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@magictracks.toys. Also on September 21, 2018, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a United States direct response company founded in 1994 that develops, markets, and distributes various consumer goods, including a race track toy that it offers under the MAGIC TRACKS mark. Complainant states that its products are sold in nearly every major retail chain in the United States and in more than 30 countries worldwide. Many of Complainant's products, including the MAGIC TRACKS toys, are also sold through Complainant's website. Complainant owns various trademark registrations for MAGIC TRACKS, including a U.S. registration issued in 2017 for the mark in standard character form; that registration reflects a first use in commerce date of July 18, 2016. Complainant also uses a stylized logo that incorporates the MAGIC TRACKS mark.
Respondent registered the disputed domain name <magictracks.toys> in August 2018. The domain name is being used for a website that mimics the appearance of Complainant's websites and displays Complainant's MAGIC TRACKS mark in the same stylized logo form, along with images of Complainant's product packaging. Respondent's website offers for sale products that appear to be authentic MAGIC TRACKS toys, but that Complainant alleges are in fact counterfeit versions. Complainant states that Respondent is not affiliated with or endorsed by Complainant, that Complainant has not authorized or licensed Respondent to use its mark, and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <magictracks.toys> is confusingly similar to its MAGIC TRACKS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
The disputed domain name <magictracks.toys> incorporates Complainant's registered MAGIC TRACKS trademark, omitting the space and appending the ".toys" top-level domain, which corresponds to a generic term for Complainant's products. These alterations are insufficient to distinguish the domain name from Complainant's mark. See, e.g., Ontel Products Corp. v. Ming Li, FA 1761849 (Forum Jan. 10, 2018) (finding <magictracksbuy.com> confusingly similar to MAGIC TRACKS); Ontel Products Corp. v. Waweru Njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding <magictrackscars.com> confusingly similar to MAGIC TRACKS); LEGO Juris A/S v. Daniel Pinegar, D2014-2142 (WIPO Mar. 6, 2015) (finding <legos.toys> confusingly similar to LEGO). Accordingly, the Panel considers the disputed domain name to be identical or confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that mimics Complainant's websites, displays Complainant's mark and logo, and sells or purports to sell what appear to be counterfeit versions of Complainant's products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Ontel Products Corp. v. Ming Li, supra (finding lack of rights or interests in similar circumstances); Ontel Products Corp. v. Waweru Njoroge, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name corresponding to Complainant's registered mark for a website that mimics Complainant's websites, displays Complainant's mark and logo, and sells or purports to sell what appear to be counterfeit versions of Complainant's products. Such use is indicative of bad faith registration and use under both of these provisions of Policy. See, e.g., Ontel Products Corp. v. Ming Li, supra (finding bad faith in similar circumstances); Ontel Products Corp. v. Waweru Njoroge, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <magictracks.toys> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 22, 2018
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